Trade Marks Inter Partes Decision O/358/14
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O-358-14 TRADE MARKS ACT 1994 IN THE MATTER OF TRADE MARK APPLICATION 2647323 BY THE RETRO BAG SHOP TO REGISTER THE FOLLOWING TRADE MARK IN CLASS 18: AND OPPOSITION THERETO (NO. 400326) BY BRIAN POULTON The background and the pleadings 1) The protagonists to this dispute are The Retro Bag Shop (the “applicant”) on the one hand and Mr Brian Poulton on the other. The dispute concerns whether the following trade mark, which was filed on 27 December 2012, should be registered: for the following class 18 goods: imitations of leather, travelling bags, handbags, rucksacks, purses, wallets; flight and shoulder bags. 2) Mr Poulton’s only ground of opposition is under section 3(1)(d) of the Trade Mark Act 1994 (“the Act”). His claim is that: “The mark is descriptive of a genre as it has been in general use since 1960/70s referring to “mod” culture and the music scene in the North of England. The clenched fist emanates from the “black power” movement of that period. The mark has been [in] common usage on bags, badges and clothing for the past 40 years and on this basis the logo should be free for all traders, clubs and societies to use as they wish.” 3) The applicant filed a counterstatement in which it: i) Denies that the mark is descriptive of a genre; ii) States that as far as it is aware, it is the only manufacturer of bags with the mark on; iii) States that it has been using the mark on bags for 20 years; iv) Denies that the mark is in customary use or is in the established practices of the industry. 4) Both sides filed evidence. Neither side requested a hearing, both opting to file written submissions instead. The legislation and the leading case-law 5) Section 3(1)(d) of the Act prevents registration of: “...trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade. Page 2 of 17 Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.” 6) In Merz & Krell GmbH & Co [2002] ETMR 21, the Court of Justice of the European Union (“CJEU”) provided guidance on how this provision is to be interpreted: “24 Accordingly, signs or indications that are not capable of fulfilling the essential function of a trade mark cannot enjoy the protection conferred by registration. As is made clear by the tenth recital in the preamble to the Directive, the purpose of the protection afforded by the registered trade mark is in particular to guarantee that trade mark's function as an indication of origin. 25 Article 3(1)(d) of the Directive must be interpreted in the light of those considerations. 26 Under Article 3(1)(d) of the Directive, trade marks which consist exclusively of signs or indications which have become customary in the current language or trade practices are to be refused registration. 27 It is true that, unlike Paragraph 8(2)(3) of the Markengesetz, which refers to trade marks that consist exclusively of signs or indications which have become customary in the current language or trade practices “to designate the goods or services”, Article 3(1)(d) of the Directive contains no such qualification. It cannot, however, be concluded from that that, in order to assess the merits of an application for registration of a trade mark, account should not be taken of the connection between the signs or indications constituting the trade mark and the goods or services covered by that mark. 28 The purpose of Article 3(1)(d) of the Directive is to prevent the registration of signs or indications that are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and so do not satisfy the criterion laid down in Article 2 of the Directive. 29 The question whether particular signs or indications possess distinctive character cannot, however, be considered in the abstract and separately from the goods or services those signs or indications are intended to distinguish. 30 That finding is corroborated by Article 3(3) of the Directive. As the Court held at paragraph 44 of the judgment in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] E.C.R. I-2779, it is through the Page 3 of 17 use made of it that such a sign acquires the distinctive character which is a prerequisite for its registration under that provision. However, whether a sign does have the capacity to distinguish as a result of the use made of it can only be assessed in relation to the goods or services covered by it. 31 It follows that Article 3(1)(d) of the Directive must be interpreted as only precluding registration of a trade mark where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought.” ………. “41 It follows that Article 3(1)(d) of the Directive must be interpreted as meaning that it subjects refusal to register a trade mark to the sole condition that the signs or indications of which the trade mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought. It is immaterial, when that provision is applied, whether the signs or indications in question describe the properties or characteristics of those goods or services.” 7) In Stash Trade Mark BL O/281/04, Prof Annand (sitting as the Appointed Person) provided further guidance, stating: “...On my reading, there are two separate limbs of section 3(1)(d). A mark must be refused registration if, in relation to the goods or services applied for, it has become customary: (a) in the current language; or (b) in the bona fide and established practices of the trade. It is clear from the proviso to section 3(1), that the general objection to marks which fall within section 3(1)(b) – (d) is that they are lacking in distinctive character (Case C-299/99 Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd [2002] ECR I-5475, para. 58) . If the relevant public has come to view a sign in current language use as a generic name for the goods or services in question, then the objection is satisfied because the mark is prima facie lacking in distinctive character. An added requirement that the name must have become customary also in the current language of the trade is superfluous. I note that the District Court of The Hague, Civil Section D, expressed a similar view on parallel Page 4 of 17 legislation in Healing Herbs Limited v. Bach Flower Remedies Limited, Case 02/244, 30 June 2004. 31. Mr. Malynicz based his argument on the ECJ decision in Merz & Krell, supra., concerning the equivalent Article 3(1)(d) of Council Directive 89/104/EEC (“the Directive”) and, in particular, paragraph 35 where the ECJ said: “… marks covered by Article 3(1)(d) are excluded from registration not on the basis that that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which marks are sought to be registered.” But, it is important to realise that, here, the ECJ was considering the overlap between Article 3(1)(c) and (d) of the Directive (section 3(1)(c) and (d) TMA) in the context of the second part of the referred question, whether to fall within Article 3(1)(d) a mark must describe the properties or characteristics of the goods or services concerned. Paragraph 35 on the one hand is to be compared with paragraph 26 on the other hand where the ECJ, in the course of deciding the first part of the referred question to the effect that Article 3(1)(d) must be assessed in relation to the goods or services applied for, said: “Under Article 3(1)(d) of the Directive, trade marks which consist exclusively of signs or indications which have become customary in the current language or trade practices are to be refused registration.” 32. I was also referred to the Opinion of AG Léger (13 November 2003) and the decision of the ECJ (29 April 2004) in Case C-371/02 Björnekulla Fruktindustrier AB v. Procordia Food AB. But I do not believe either support the interpretation that the Applicant seeks to advance. Björnekulla involved Article 12(2)(a) of the Directive (section 46(1)(c) TMA), the English and Finnish (but not other language) versions of which state that a trade mark is liable to revocation if: “in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered.” (emphasis added) The ECJ followed the Advocate General in construing Article 12(2)(a) in the light of the general scheme and objectives of the Directive, particularly Article 3. Thus construed, Article 12(2)(a) could not be confined only to where the trade uses a mark generically.